DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 38 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Newly presented independent claim 38 includes the following language “in the tire circumferential direction with respect to the periphery direction”. This language does not provide a clear and concise understanding of the claimed invention since the circumferential direction corresponds with the periphery direction. Applicant is asked to clarify the scope of the claimed invention without the introduction of new matter.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 37 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hata (JP 2015-40031, newly cited).
As best depicted in Figures 1 and 2, Hata teaches a tire construction comprising a pair of bead cores 11, at least one carcass layer 13 extending between said bead portions, a plurality of belt layers 141-143, and a carcass inner rubber (combination of innerliner 18 (claimed first layer) and tie rubber layer 19 (claimed second layer)). The tire of Hata further includes a linear conductive portion 52 that extends from one of the bead portions to the belt layer (see Figure 2). Lastly, Figure 6 depicts a tire construction in which said conductive portion is positioned between innerliner 18 and tie rubber 19.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 19-24, 26, 27, and 30-36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hata (US 2017/259626, of record) and further in view of Matsumura (US 2007/0209744, of record).
As best depicted in Figures 1 and 2, Hata teaches a tire construction comprising a carcass 13, bead cores 11, a belt assembly 14 including belt layers 141, 142, and 143, an innerliner 18, a tie rubber layer 19, and sidewalls 16 (Paragraphs 40 and 63). In such an instance, the combination of innerliner 18 and tie rubber layer 19 corresponds with the claimed “carcass inner rubber layer”. Additionally, the tire of Hata includes a linear conductive pattern 52 having an electrical resistivity less than 1x 108 Ω/cm (Paragraph 73) and extending continuously at least from one of the bead portions to the belt layer.
In such an instance, though, conductive portion 52 is positioned between tie rubber layer 19 and carcass layer 13 and such does not constitute a conductive portion “at least partially positioned in the carcass inner rubber layer”.
A fair reading of Hata does not limit the placement of a conductive portion to between a tie rubber layer and a carcass layer. Figures 9 and 11, for example, depict the inclusion of a conductive portion between a carcass layer and a sidewall. Similarly, Figures 13 and 15 depict the inclusion of a conductive portion on a tire inner surface and a tire outer surface, respectively. The critical feature of Hata is the inclusion of a complete conductive path from the ground contacting tread to the wheel rim. One of ordinary skill in the art would have found it obvious to position conductive portion 52 in alternative locations so long as the aforementioned conductive path is achieved. More particularly, the placement of a conductive portion between innerliner 18 and tie rubber layer 19 remains consistent with the desire of Hata to provide a complete conductive path. The following components would define the conductive path: earthing tread 51, belt layers 14, carcass layers 13, tie rubber layer 19, conductive portion 52, and rim cushion rubber 17. Alternatively, an earthing tread having a greater radial extension and contacting said conductive portion would provide a complete conductive path. One of ordinary skill in the art would have found it obvious to position a conductive portion between an innerliner and a tie rubber layer (and thus at least partially in the carcass inner rubber layer) given the extremely limited number of locations and the fact that such a placement provides a complete conductive path. It is further noted that Hata desires a small distance, preferably less than 0.5 mm, between a conductive portion and an innerliner (Paragraph 91). The placement of a conduction portion between the inner liner and the tie rubber provides the smallest distance between a conductive portion and an innerliner and thus, such a placement would have been obvious to having ordinary skill in the art.
Lastly, with respect to claim 19, while Hata is silent with respect to the dimensions of the innerliner and the tie rubber layer, conventional thickness values would have resulted in a tire satisfying the claimed quantitative relationship. Matsumura, for example, is similarly directed to a tire including an innerliner and a tie rubber layer, wherein an innerliner thickness is 1.2 mm and a tie rubber thickness is 0.8 mm (Paragraph 37). This results in a claimed ratio of 0.6 (when the conductive portion is positioned between the innerliner and the tie rubber layer). One of ordinary skill in the art would have found it obvious to form the tire of Hata with a quantitative relationship in accordance to the claimed invention since such appears to result from using conventional dimensions for the innerliner and the tie rubber layer.
Regarding claim 20, Hata teaches a lap width La that is at least 3 mm (Paragraph 87). Given that an exemplary tire construction has a tire section width of 195 mm (Paragraph 141), it is evident that a lap width is necessarily between 0.01 and 1 times a maximum belt width (belt width is less than tire section width).
With respect to claims 22 and 23, Figure 8 depicts a tire construction in which conductive portion 52 is in contact with a conductive rim cushion rubber (low resistivity) having direct contact with a wheel rim (chafer 20 is embedded in or disposed within rim cushion rubber) (Paragraph 54).
As to claim 24, Figures 1 and 2 depict the claimed arrangement.
Regarding claims 30-34, Hata states that the conductive portion can be an intertwined plurality of electrically conductive linear members (alone or in combination with non-conductive linear members such as polyester) or can be a monofilament cord of electrically conductive material (e.g. metal or carbon) (Paragraphs 72, 73, and 76).
With respect to claim 35, Hata teaches the claimed linear density (Paragraph 81).
As to claim 36, Hata teaches the claimed elongation ration (Paragraph 83).
8. Claim(s) 25, 28 29, and 38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hata and Matsumura as applied in claim 19 above and further in view of Dheur (US 6,289,958, of record) and/or Hoshino (US 2017/0197480, of record).
As detailed above, the modified tire of Hata would include a conductive portion between an innerliner and a tie rubber layer. Hata, however, is silent with respect to the manner in which said portion is arranged within the tire construction.
In any event, sewing is a well-known and conventional manner in which reinforcements or cords are attached to tire components, as shown for example by Hoshino (Paragraphs 11 and 41) and Dheur (Figure 3A). It is particularly noted that the sewing depicted by Dheur appears to be extremely similar to that of the claimed invention and thus, the claimed inclination angles would be expected to result in the modified tire of Hata (regarding claim 25). One of ordinary skill in the art would have found it obvious to attach the conductive portion of Hata to an inner liner or tie rubber layer via sewing as such constitutes a known attachment means in similar tires comprising conductive cords, with the claimed angles specifically resulting from the method of Dheur.
Regarding claim 29, the method of Hoshino includes a sewing pitch between 2 mm and 40 mm (Paragraph 11) and such is seen to encompass the broad range of the claimed invention.
Response to Arguments
9. Applicant's arguments filed July 6, 2026 have been fully considered but they are not persuasive.
Applicant argues that while Hata discloses various potential configurations of the conductive member, Hata never discloses or suggests placement of the conductive member between the tie rubber and the liner. Applicant further states that although configurations are disclosed where the conductive portion is placed on the inner and outer surfaces of the tire, these are prone to breakage during manufacture or service and thus it is clear that not all placements provide a similar effect.
It is agreed that Hata fails to expressly disclose or depict a configuration in which a conductive portion is positioned between a tie rubber and an innerliner. The rejection, however, is based on obviousness as opposed to anticipation (the fact that Hata ‘626 fails to describe or depict the claimed configuration does not prevent a rejection under obviousness). Thus, the question at hand is whether one having ordinary skill in the art would have found it obvious to position the conductive portion of Hata ‘626 between an innerliner and a tie rubber layer. As acknowledged by Applicant, Hata ‘626 describes a plurality of exemplary configurations in which the conductive portion arrangement is both embedded within the tire and positioned on an exposed surface of said tire. In all of these configurations, the desired conductive path between the ground and the rim is achieved. Given such a disclosure, one of ordinary skill in the art would have found it obvious to place the conductive portion of US ‘626 between innerliner 18 and tie rubber 19. It is emphasized that the placement of a conductive portion between any two layers would result in the desired conductive path and in light of Hata ‘626 stating that configurations on a tire inside or a tire outside are prone to breakage, there would be specific motivation to embed the conductive portion within the tire and such is consistent with the claimed configuration. Again, even configurations in which the conductive portion is placed on a tire surface (not embedded) correspond with inventive tire constructions (albeit a non-preferred embodiment). It is further noted that Hata ‘626 (Paragraph 98) includes the following language:
Specifically, the distance from the electrically conductive portion 52 to the innerliner 18 can be reduced to 1.0 mm or less. This configuration is preferable, in particular when the innerliner 18 is made of thermoplastic resin, because static electricity produced in the innerliner 18 can efficiently dissipate through the electrically conductive portion 52.
It is evident that a distance of 1.0 mm or less encompasses configurations in which the conductive portion is in direct contact with the innerliner and a distance is 0 mm (corresponds with claimed configuration in which the conductive portion is positioned between the innerliner and the tier rubber). As such, one of ordinary skill in the art would have found it obvious to position the conductive portion of Hata ‘626 between the innerliner and the tie rubber (would result in an efficient dissipation of static electricity). It is emphasized that such a configuration is consistent with the preferred configurations of Hata ‘626 in which (a) the conductive portion is embedded in the tire and (b) a distance between the conductive portion and the innerliner is 1.0 mm or less. Lastly, Hata ‘031 (newly cited in view of claims 37 and 38) recognizes the alternative use of configurations in which a conductive portion is positioned between an innerliner and a tie rubber (Figure 4) or between a tie rubber and a carcass (Figure 6).
Applicant further contends that when a tire includes a tie rubber between the carcass and the innerliner, the tie rubber and the innerliner are commonly laminated together before placement on the forming drum and thus it is a significantly different process to place the wire in the laminate and then place the laminate. Without acquiescing Applicant’s statement, the fact that a method is “common” suggests that a method is in fact carried out in which the innerliner and the tie rubber layer are no laminated together prior to placement on a forming drum. Inoue (JP 2010-162825), for example, is directed to a process in which an innerliner 10 is initially placed on a molding drum 21 and a tie rubber 9, and other tire components, is subsequently attached or laid on said innerliner (Figures 3-6). Thus, the placement of a conductive portion between a tie rubber and an innerliner is consistent with known tire manufacturing processes. This is further supported by Hata ‘031 in which a conductive portion is specifically positioned between an innerliner and a tie rubber.
In regards to the amended limitations (previous claim 21), it is emphasized that the innerliner and the tie rubber of Hata ‘626 necessarily have a thickness. When forming the tire of Hata ‘626 and without any specific direction in Hata ‘626, one of ordinary skill in the art would have been motivated to select a thickness that is consistent with well-known and conventional tire constructions. Matsumura provides one example of the general order of thickness values for a tire innerliner and a tie rubber and in such an instance, a ratio as claimed is 0.6 and in the middle of the broad range of the claimed invention. It is further noted that Applicant has not provided a conclusive showing of unexpected results for the claimed ratio (lack of comparative examples having ratios outside that required by the claimed invention).
Regarding claims 28 and 29, the applied references suggest that sewing is a well-known and conventional manner in which reinforcements or cords are attached to tire components in general. A fair reading of the applied references does not suggest that sewing is somehow limited to a tread or a carcass. It is emphasized that the fact that the applied references recognize sewing with different tire components further suggests that it would have been obvious to use sewing with additional components, including the innerliner and/or the tie rubber.
As to new independent claim 38, the disclosure in Paragraph 90 of Hata ‘626 does not suggest a requirement that the conductive portion is linear or along a straight line along the carcass layer. This is particularly evident by the language “for example”. It is emphasized that an inventive concept of Hata ‘626 is the general inclusion of a conductive portion from a bead portion to a belt portion. This conductive portion can be achieved independent of the exact contour or path of the conductive portion. In view of Hoshino, for example, a conducive cord or reinforcement can be sewn into a tire component, in which case said cord or reinforcement zigzags in and out of said tire component. In such an instance, said cord would be expected to have some circumferential component along the conductive path from the belt to the bead.
Conclusion
10. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN R FISCHER whose telephone number is (571)272-1215. The examiner can normally be reached M-F 5:30-2:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Katelyn Smith can be reached at 571-270-5545. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Justin Fischer
/JUSTIN R FISCHER/Primary Examiner, Art Unit 1749 September 3, 2026
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